The Problem with Secret Prior Art

The Problem with Secret Prior Art

The Problem with Secret Prior Art

Michael Caine, a Principal of Davies Collison Cave Pty Ltd, has had a keen interest in work relating to the harmonisation of international patent laws since he became a council member of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) in 2001 and took up the role of convenor of the International Patents Committee. Since then, Michael has extended his interest and involvement in international patent issues, being appointed the chair of Group 3 (International Patents) Study & Work Commission (CET) of the International Federation of Intellectual Property Attorneys (FICPI) in 2012, a role he still holds.

One of the international patent law harmonisation topics of particular interest to Michael is “conflicting applications”, referred to in some circles as “secret prior art”. A conflicting application is a patent application having a filing date (or priority date) earlier than that of an application or patent under consideration, but which was published later. Efforts towards reaching an international consensus in respect of the treatment of conflicting applications have thus far failed.

Michael has now examined the historical background to the different treatments of conflicting applications within a first to invent patent systems relative to first to file patent systems, and has formed the view that the European approach to conflicting applications, otherwise referred to as the “whole of contents novelty” approach, is the approach most suited to a first to file system. His reasons for reaching this conclusion are explained in his article entitled “The Problem with Secret Prior Art”, that can be found by clicking here. They key points discussed in the article are reproduced below:

Key points:

  • It is generally agreed that the International patent system would benefit from some harmonisation of substantive patent laws, particularly in relation to the definition of prior art and the treatment of earlier filed but later published applications (“conflicting applications”)
  • Although in concluding the European Patent Convention in 1973 it was possible to reach a consensus among the 19 member countries in relation to the treatment of conflicting applications, no such consensus has been reached in WIPO patent law harmonisation forums involving the United States.
  • The descriptors “first to file” and “first to invent” as applied to patent systems are short hand references to the way conflicting applications are treated in those systems. It is therefore not surprising that principles and practices developed in a first to invent system may not be readily transposable into a first to file system. In particular, while conflicting applications represent “secret” prior art in a first to invent system they do not represent actual prior art in a first to file system.
  • Although the United States has abandoned its first to invent system in favour of a new “first inventor to file” system, the new system borrows several elements from the earlier first to invent system, particularly in relation to the treatment of conflicting applications and application of the grace period. The system introduced into the United States with the America Invents Act is new, and it remains to be seen over time whether this hybrid system will work well in practice.
  • The European “whole of contents novelty” approach to the treatment of conflicting applications represents a further extension of the “prior claiming” approaches popular throughout Europe prior to commencement of the EPC in 1977. These approaches acknowledge that both first and second applicants have made inventions over the prior art and are deserving of patent protection, but require the later applicant to subtract subject matter disclosed (or claimed) in the earlier application from their claims to avoid double patenting. There is no assessment of whether the later applicant has made a novel or inventive contribution over the disclosure, or claims, of the earlier applicant. The whole of contents is only deemed to be part of the state of the art for novelty so that the subject matter to be subtracted from the later claims can be identified.
  • The European whole of contents approach, while going further than necessary to avoid double patenting, has the advantage that it avoids the need to defer examination of the later application until the claims of the earlier application are finalised.
  • The whole of contents approach also avoids creating a gap or “distance” between the claims of the patents granted on the earlier and later applications. Any such gap is likely to include subject matter enabled by the later patentee, but for which protection is not obtained by either patentee. The subject matter in the gap could be exploited with impunity by third parties to the detriment of both patentees.
  • Group B+ should look more closely at the benefits (including simplicity) of the European whole of contents approach as a model system for international harmonisation of the treatment of conflicting applications. Adopting a system that has stood the test of time within a first to file system is preferable to adopting any new hybrid system that has not previously been put to the test.

The views expressed in Michael’s paper are his own views, and should not be considered to represent the views of FICPI or IPTA.

To read the full article click here.